Exhibit 2.13
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Cross-License Agreement
This License Agreement is effective as of the 28/th/ day of August 2000
(the "Effective Date") by and between RIVERSTONE NETWORKS, INC., a Delaware
Corporation ("Riverstone") and APRISMA MANAGEMENT TECHNOLOGIES, INC., a Delaware
corporation ("Aprisma"). Licensor and Licensee may also be referred to below as
the "Parties," and, individually, as a "Party".
WHEREAS, the Parties are among the parties to the Transformation Agreement;
and
WHEREAS, in Section 4.1.3 of the Transformation Agreement, the Parties
agreed to enter into a License Agreement in which they would each grant one
another certain licenses provided the other complied with the terms and
conditions of those licenses;
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements, provisions and covenants contained herein and therein, and for other
good and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties agree as follows:
1. DEFINITIONS
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For the purposes of this Agreement, capitalized words or phrases will have
the meanings ascribed to them below.
1.1 "Affiliate" means any company, corporation, business, or other entity
that is both (i) a direct or indirect subsidiary of a Party and (ii)
controlled by that Party. For purposes of this definition, "control"
means direct or indirect beneficial ownership of at least fifty
percent (50%) of the voting stock (or the equivalent) of an entity.
1.2 "Ancillary Agreements" has the meaning given it in the Transformation
Agreement.
1.3 "Aprisma Business as of the Effective Date" means the "Company
Business" as that term is defined in the Aprisma Contribution
Agreement and as that Company Business exists as of the Effective
Date.
1.4 "Aprisma Contribution Agreement" means the Asset Contribution
Agreement effective June 3, 2000, by and between Cabletron Systems,
Inc. and Aprisma Management Technologies, Inc.
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1.5 "Aprisma Know-How" means that technology, inventions, or technical
information, whether patentable or not, (a) that was discovered,
invented or developed before the Effective Date, (b) that is useful in
connection with the conduct of the Riverstone Business as of the
Effective Date, and (c) which constitutes and will continue to
constitute Confidential Information of Aprisma.
1.6 "Aprisma Patents" means (i) those patents and patent applications that
are included within the term "Contributed Registered Intellectual
Property", as defined in the Aprisma Contribution Agreement; (ii)
those patent applications filed by Aprisma or its Affiliates within
the two (2) years of the Effective Date and any patents that issue as
a result of any such patent applications; (iii) any foreign or
domestic counterparts to any patent or patent application within (i)
or (ii); and any and all reissues, divisions, renewals, extensions,
provisionals, continuations, and continuations-in-part thereof of any
patent or patent application within (i), (ii), or (iii).
1.7 "Aprisma Products" means the "Products" as that term is defined in the
Aprisma Contribution Agreement.
1.8 "Business as of the Effective Date" means, depending on the context
either the Aprisma Business as of the Effective Date or the Riverstone
Business as of the Effective Date.
1.9 "Confidential Information" means any and all information of or about
Party, including all information relating to any technology, product,
process or intellectual property of a Party (including, but not
limited to, owned or licensed intellectual property rights, data,
know-how, samples, technical and non-technical materials and
specifications) as well as any business plan, financial information or
other confidential commercial information of or about a Party.
1.10 "Riverstone Business as of the Effective Date" means the "Company
Business" as that term is defined in the Riverstone Contribution
Agreement and as that Company Business exists as of the Effective
Date.
1.11 "Riverstone Contribution Agreement" means the Asset Contribution
Agreement effective June 3, 2000, by and between Cabletron Systems,
Inc. and Riverstone Networks, Inc.
1.12 "Riverstone Know-How" means that technology, inventions, or technical
information, whether patentable or not, (a) that was discovered,
invented or developed before the Effective Date, (b) that is useful in
connection with the conduct of the Aprisma Business as of the
Effective Date, and (c) which
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constitutes and will continue to constitute Confidential Information
of Riverstone.
1.13 "Riverstone Patents" means (i) those patents and patent applications
that are included within the term "Contributed Registered
Intellectual Property", as defined in the Riverstone Contribution
Agreement; (ii) those patent applications filed by Riverstone or its
Affiliates within the two (2) years of the Effective Date and any
patents that issue as a result of any such patent applications; (iii)
any foreign or domestic counterparts to any patent or patent
application within (i) or (ii); and any and all reissues, divisions,
renewals, extensions, provisionals, continuations, and continuations-
in-part of any patent or patent application within (i), (ii), or
(iii).
1.14 "Riverstone Products" means the "Products" as that term is defined in
the Riverstone Contribution Agreement.
1.15 "Know-How" means, depending on the context, either Aprisma Know-How
or Riverstone Know-How.
1.16 "Patents" means, depending on the context, either Aprisma Patents or
Riverstone Patents.
1.17 "Products" means, depending on the context, either Aprisma Products
or Riverstone Products.
1.18 "Territory" means all territories.
1.19 "Transformation Agreement" means the Transformation Agreement entered
into as of June 3, 2000, by and among Cabletron Systems, Inc.;
Aprisma Management Technologies, Inc.; Riverstone Networks, Inc.;
GlobalNetwork Technology Services, Inc.; and Riverstone Networks,
Inc.
2. GRANTS OF LICENSES
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2.1 License Grant to Aprisma. Subject to the terms and conditions of
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this Agreement, Riverstone grants Aprisma and its Affiliates, as they
may exist from time to time, a limited, royalty-free, fully-paid,
non-exclusive, non-transferable, perpetual license under the
Riverstone Patents and the Riverstone Know-How in the Territory only:
2.1.1 to use the Riverstone Patents and the Riverstone Know-How in
the conduct of the Aprisma Business as of the Effective Date,
and
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2.1.2 to design, develop, make, have made, use, market, distribute
(directly and indirectly), license, sell, maintain and support
Aprisma Products, and products that are extensions to,
modifications of, improvements on, or successor products that
fulfill a similar or enhanced function to those Products,
provided, however, that no license is given for any use that is
competitive with the Riverstone Business as of the Effective Date or
that would allow Aprisma to design, develop, make, have made, use,
market, distribute (directly and indirectly), license, or sell any
products that are directly or indirectly competitive with any
Riverstone Products.
2.2 License Grant to Riverstone. Subject to the terms and conditions of
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this Agreement, Aprisma grants Riverstone and its Affiliates, as they
may exist from time to time, a limited, royalty-free, fully-paid, non-
exclusive, non-transferable, perpetual license under the Aprisma
Patents and the Aprisma Know-How in the Territory only:
2.2.1 to use the Aprisma Patents and the Aprisma Know-How in the
conduct of the Riverstone Business as of the Effective Date,
and
2.2.2 to design, develop, make, have made, use, market, distribute
(directly and indirectly), license, sell, maintain, and
support Riverstone Products, and products that are extensions
to, modifications of, improvements on, or successor products
that fulfill a similar or enhanced function to those Products,
provided, however, that no license is given for any use that is
competitive with the Aprisma Business as of the Effective Date or that
would allow Riverstone to design, develop, make, have made, use,
market, distribute (directly and indirectly), license, sell any
products that are directly or indirectly competitive with any Aprisma
Products.
2.3 Affiliates. For any entity that becomes an Affiliate of Party after
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the Effective Date, the licenses to that Affiliate will only become
effective as of the date that entity becomes an Affiliate of that
Party. Any rights granted to an entity that is an Affiliate of a Party
under this Agreement shall terminate, without any action on the other
Party's part, upon that entity's ceasing to be an Affiliate of such
Party.
2.4 Sublicenses. A Party may not grant any sublicenses or licenses under
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the licenses granted to it under this Agreement.
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2.5 Reservation of Rights. All rights, title and interest in and to one
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Party's Patents and Know-How not specifically granted by this
Agreement are reserved to that Party for that Party's own use and
benefit.
3 MARKING
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3.1 Marking Requirement. A Party shall xxxx all its Products, or their
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respective containers, labels, or documentation, with the numbers of
each of the other Party's Patents licensed under this Agreement that
has one or more claims that cover such Products.
4 REPRESENTATIONS AND WARRANTIES
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4.1 Aprisma's Representations. Aprisma hereby represents and warrants to
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the Riverstone that (a) Aprisma is a corporation duly organized,
validly existing and in good standing under the laws of the
jurisdiction of the State of Delaware, and (b) Aprisma has full
corporate power and authority to execute, deliver and perform this
Agreement.
4.2 Riverstone's Representations. Riverstone hereby represents and
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warrants to the Aprisma that (a) Riverstone is a corporation duly
organized, validly existing and in good standing under the laws of the
jurisdiction of the State of Delaware, and (b) Riverstone has full
corporate power and authority to execute, deliver and perform this
Agreement.
4.3 Aprisma's Disclaimer of All Other Warranties. EXCEPT AS EXPRESSLY
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STATED IN SECTION 4.1, APRISMA IS PROVIDING THE LICENSES AND RIGHTS IT
HAS GRANTED IN THIS AGREEMENT AS IS AND AS AVAILABLE. APRISMA MAKES
NO, AND EXPRESSLY DISCLAIMS, ALL WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF TITLE, NON-
INFRINGEMENT, MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
4.4 Enteresys's Disclaimer of All Other Warranties. EXCEPT AS EXPRESSLY
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STATED IN SECTION 4.2, RIVERSTONE IS PROVIDING THE LICENSES AND RIGHTS
IT HAS GRANTED IN THIS AGREEMENT AS IS AND AS AVAILABLE. RIVERSTONE
MAKES NO, AND EXPRESSLY DISCLAIMS, ALL WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF TITLE, NON-
INFRINGEMENT, MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
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5 EXCLUSION OF DAMAGES AND INDEMNIFICATION
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5.1 Exclusion of Damages. EXCEPT FOR A BREACH OF ANY PROVISION OF
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SECTIONS 2, 3, 8.4 AND 8.5 OF THIS AGREEMENT, IN NO EVENT SHALL EITHER
PARTY BE LIABLE FOR ANY INDIRECT OR CONSEQUENTIAL DAMAGES, INCLUDING
ANY LOSS OF TIME, MONEY, PROFITS, DATA, OR GOODWILL, RESULTING FROM OR
THROUGH THE EXERCISE OR ATTEMPTED EXERCISE OF ANY RIGHTS GRANTED IN
THIS AGREEMENT, EVEN IF SUCH PARTY HAS BEEN APPRISED OF THE
POSSIBILITY OF SUCH DAMAGES.
5.2 Indemnification. The provisions of Section 6 of the Transformation
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Agreement shall apply to indemnity claim for or obligation of
indemnity between the Parties under this Agreement.
6 INFRINGEMENT BY OTHERS; PROTECTION OF PATENTS
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6.1 Notice of Infringement. Each Party shall promptly inform the other
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Party of any suspected infringement by a third party of any of such
other Party's Patents or Know-How licensed under this Agreement.
6.2 Right to Request Permission to Assert Patent Rights. During the
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term of this Agreement, if a Party is named as a defendant in any
action claiming that any of its Products or the operation of its
Business as of the Effective Date infringes a patent owned by a third
party, that Party may request permission from the other Party to
assert against that third party a claim of infringement of one or more
of the such other Party's Patents licensed under this Agreement. Any
such request shall identify the third party and also include that
information necessary for such other Party to consider whether a basis
for such a claim exists; the likelihood of success of such a claim;
and the risks associated with asserting such a claim.
6.3 Assertion of Patent Rights. The Party owning a Patent in its sole
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discretion may grant or not grant permission to the other Party to
assert a claim of infringement of one or more of its Patents against a
third party. If such permission is granted, the Parties may proceed as
follows:
6.3.1 The Party owning a Patent may institute suit jointly with the
other Party, the suit being brought in both their names, the
out-of-pocket costs thereof being borne equally, and any
recovery or settlement being shared equally. The Parties shall
agree to the manner in which they shall exercise control over
such action, with the Party owning the Patent having ultimate
decision authority as to all matters as to which the Parties
cannot agree. The Party not owning the Patent may, if it so
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desires, also be represented by separate counsel of its own
selection, the fees for which counsel shall be paid by such
Party;
6.3.2 The Party owning a Patent may institute suit on its own. Such
Party shall bear the entire cost of such litigation and shall
be entitled to retain the entire amount of any recovery or
settlement. The other Party shall have no right or interest in
such action or any recovery or settlement achieved through it;
or
6.3.3 The Party owning a Patent may allow the other Party to
institute the suit, naming the Party owning the Patent as a
party. Such other Party shall bear the entire cost of such
litigation, including expenses incurred by the Party owning
the Patent. Such other Party may not settle or otherwise
compromise such claims absent the express written permission
of the Party owning the Patent. Any recovery in excess of
litigation costs will be shared equally by the Parties. The
Parties agree to negotiate in good faith an appropriate
compensation to the Party owning the Patent for any non-cash
settlement or non-cash cross-license .
6.4 Abandonment of Actions. Should either Party commence a suit under the
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provisions of Section 6.3 and thereafter elect to abandon the same, it
shall give timely notice to the other Party who may, if it so desires,
continue prosecution of such suit, provided, however, that the sharing
of expenses and any recovery in such suit shall be as agreed upon
between Parties.
7 TERMINATION
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7.1 Term. Unless otherwise terminated in accordance with the terms of
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this Agreement or by mutual consent, the term of this Agreement is
perpetual.
7.2 Termination By Mutual Consent. The Parties may terminate this
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Agreement by mutual consent, in writing.
7.3 Effect of Termination. Upon a termination of this Agreement, any
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Confidential Information of one Party in the possession of the other
Party and its Affiliates shall be returned and all licenses granted
hereunder shall terminate.
7.4 Survival. Sections 4, 5, and 8 shall survive any termination of this
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Agreement.
8 MISCELLANEOUS
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8.1 Entire Agreement. This Agreement, the Transformation Agreement and
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the other Ancillary Agreements, including the Schedules and Exhibits
hereto and
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thereto, and the other documents delivered hereunder and thereunder
constitute the entire agreement among the Parties hereto pertaining to
the subject matter hereof and supersede all prior or contemporaneous
agreements, understandings, negotiations and discussions, whether oral
or written, of the Parties with respect to such subject matter.
8.2 Amendment or Modification. Except as otherwise provided in the
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Transformation Agreement, the Parties may not amend or modify this
Agreement except by a written instrument executed by the Parties.
8.3 Severability. In the event that any provision hereof would, under
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applicable law, be invalid or unenforceable in any respect, such
provision shall (to the extent permitted under applicable law) be
construed by modifying or limiting it so as to be valid and
enforceable to the maximum extent compatible with, and possible under,
applicable law. The provisions hereof are severable, and in the event
any provision hereof should be held invalid or unenforceable in any
respect, it shall not invalidate, render unenforceable or otherwise
affect any other provision hereof.
8.4 Confidential Information. Each Party shall maintain the Confidential
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Information of the other Party in confidence to the same extent that
such Party maintains and protects its own confidential information,
and shall not disclose, divulge or otherwise communicate such
Confidential Information to others, or use it for any purpose, except
pursuant to, and in order to carry out, the terms and objectives of
this Agreement or with the express written consent of the Party that
provided the Confidential Information. Each Party also hereby agrees
to take reasonable steps to prevent and restrain the unauthorized
disclosure of such Confidential Information by any of its directors,
officers, employees, consultants, sub-contractors or agents. The
provisions of this paragraph shall not apply to any Confidential
Information of a Party which is required to be disclosed by the other
Party to comply with any applicable laws or regulations, but only to
the extent required by such law or regulation and further provided
that the Party, before making any disclosure pursuant to the
provisions of this sentence, shall provide prior written notice of
such disclosure to the other Party sufficiently in advance of such
disclosure to allow such Party to respond and to take reasonable and
lawful action to avoid and/or minimize the degree of such disclosure.
8.5 Successors and Assigns. Neither Party may transfer or assign this
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Agreement without the express written consent of the other Party,
provided, however, that a Party may transfer or assign this Agreement
in connection with the sale of all or substantially all its business
to a successor to that business. Any attempt to assign this Agreement
in violation of this Section shall be null and void. All the
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terms and provisions of this Agreement shall be binding upon and shall
inure to the benefit of the Parties hereto and their respective
permitted transferees and assigns (each of which transferees and
assigns shall be deemed to be a Party hereto for all purposes hereof).
8.6 Notices. Any notices or other communications required or permitted
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hereunder shall be sufficiently given if in writing and delivered
personally or sent by telecopier, Federal Express, or registered or
certified mail, postage prepaid, addressed as follows:
If to Aprisma,
to it at: Aprisma Management Technologies, Inc.
000 Xxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attention: President
Telecopier No.: (000) 000-0000
with a copy to: Ropes & Xxxx
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attention: Xxxxx X. Fine
Telecopier No.: (000) 000-0000
If to Riverstone,
to it at: Riverstone Networks, Inc.
0000 Xxxxx Xxxxxxxx Xxxxxxx
Xxxxx Xxxxx, XX
Attention: President
Telecopier No.: (000) 000-0000
with a copy to: Ropes & Xxxx
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attention: Xxxxx X. Fine
Telecopier No.: (000) 000-0000
Unless otherwise specified herein, such notices or other
communications shall be deemed received (a) on the date delivered, if
delivered personally, (b) two Business Days after being sent by
Federal Express, if sent by Federal Express, (c) one Business Day
after being delivered, if delivered by telecopier and (d) three
Business Days after being sent, if sent by registered or certified
mail. Each of the Parties hereto shall be entitled to specify a
different address by giving notice as aforesaid to each of the other
Parties hereto.
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8.7 Interpretation. Section and subsection headings are not to be
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considered part of this Agreement, are included solely for
convenience, are not intended to be full or accurate descriptions of
the content thereof and shall not affect the construction hereof. No
rule of strict construction shall apply to or be used against any
Party hereto.
8.8 Third Party Beneficiaries. Nothing in this Agreement is intended or
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shall be construed to entitle any person or entity other than the
Parties and their respective transferees and assigns permitted hereby
to any claim, cause of action, remedy or right of any kind.
8.9 Counterparts. This Agreement may be executed in any number of
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counterparts, each of which shall be deemed an original, but all of
which together shall constitute but one and the same instrument.
8.10 Governing Law. This Agreement shall be governed by and construed in
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accordance with the domestic substantive laws of the State of
Delaware, without giving effect to any choice or conflict of law
provision or rule that would cause the application of the laws of any
other jurisdiction.
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IN WITNESS WHEREOF, the Parties hereto, intending to be legally bound
hereby, have caused this Agreement to be executed, as of the date first above
written by their respective officers thereunto duly authorized.
APRISMA MANAGEMENT
TECHNOLOGIES, INC.
By: /s/ Xxxxxxx Xxxxxxx
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Title: President
RIVERSTONE NETWORKS, INC
By: /s/ Xxxxxxx Xxxxxxx
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Title: President
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